The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Brian Flynn, Partner—Patents
Brian Flynn focuses on patent prosecution and patent portfolio management. He counsels clients in a wide variety of technologies, including medical devices (e.g., medical and dental instruments, implants, diagnostic equipment, and communication and data systems), mechanical technologies (e.g., automotive technology, sporting goods, kitchen appliances, beverage containers, and toys), and electronics (e.g., digital camera technology, mobile devices, GPS devices, and sensor technology). In addition, Brian has assisted clients with patent acquisition due diligence and intellectual property opinions.
Brian has served as an editor of and contributor to the firm’s medical device blog.
Brian received his law degree from the University of Illinois College of Law, where he served as the secretary for the Intellectual Property Legal Society and as an articles editor for the Journal of Law, Technology & Policy. Prior to his legal education, he received a Bachelor’s Degree in Bioengineering from the University of Illinois.
Describe your practice area and what it entails.
The majority of my practice is in patent prosecution and patent portfolio management. I work with clients to develop strategies for protecting their innovations and advancing their business interests by building patent portfolios. I speak with clients to learn about their technologies, draft patent applications, and prosecute those applications at the U.S. Patent and Trademark Office. I also work with clients to develop international filing strategies and manage the prosecution of their international patent portfolios. Additionally, I perform due diligence for patent acquisitions and prepare intellectual property opinions.
What types of clients do you represent?
My clients range from individual inventors to Fortune 500 companies. Many of my clients are medical device companies or medical practitioners. I have also represented clients in a variety of other industries, including automotive, electronics, food and beverage, and sporting goods and recreation. Additionally, I prosecute patent applications in the United States for foreign law firms.
What types of cases/deals do you work on?
I prepare and prosecute both utility and design patent applications, including appeals at the U.S. Patent and Trademark Office. I also perform due diligence and draft intellectual property opinions. Additionally, I assist clients in patent strategy, manage patent portfolios, and oversee international patent prosecution.
How did you choose this practice area?
After studying bioengineering, I gravitated towards intellectual property due to the opportunities for learning about and working with new technologies. At the start of my career, I was able to work on patent prosecution and litigation matters. I chose to focus on patent prosecution because I enjoyed working with inventors and developing patent strategies to help them protect their innovations.
What is a typical day like and/or what are some common tasks you perform?
Every day is different, but common tasks include drafting patent applications, responding to Office Actions, attending invention disclosure meetings or patent strategy meetings with clients, conducting patent examiner interviews, attending internal strategy meetings, and attending networking events.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
I was able to take a patent prosecution class in law school in which I drafted a mock patent application and responded to a mock Office Action. If any similar opportunity is available, I could not recommend it enough. It provided me with a great foundation to build on as a summer associate. I would also recommend any class that gives you the opportunity to practice advocacy skills. Classes like Trial Advocacy were vital for developing skills I use while prosecuting applications at the Patent Office. Any opportunity to practice writing would also be beneficial.
What do you like best about your practice area?
No two days are ever the same. I continuously learn about new technologies. As my clients’ technology and business interests change, I get the opportunity to face new challenges that help me grow as an attorney.
What kinds of experience can summer associates gain in this practice area at your firm?
Summer associates typically perform legal research, draft patent claims, draft patent applications, and draft responses to Office Actions. As a summer associate, I was also able to sit in on an examiner interview and attend an invention disclosure meeting at a client’s office.
In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?
I have been working 100 percent from home since March. So far, the scope of the work has generally stayed the same, but there is a big difference in communication, both with co-workers and clients. In the office, it was easy to stop by a colleague’s office for quick questions or strategy discussions. Now, meetings can require a little more planning. Similarly, invention disclosure meetings with clients are very different. In the past, I had visited several clients’ offices to view their technology in person, but now most of that is done over video conferencing. There has also been a big shift towards virtual events for networking. Clients have also begun developing technology related to COVID-19, and I expect we will continue to see a great deal of technological development stemming from the pandemic, not only on the medical side, but also related to the current shift toward remote work.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
When you are interviewing for IP positions, you are going to be asked why you are interested in IP. You will want to have a well-thought-out response and be able to point to a few experiences that demonstrate your interest. For example, taking IP classes, joining IP organizations, or participating in an IP journal or moot court would help show that you are genuinely interested in IP. It would also be helpful to look for internships that provide IP experience.